Abstract

The statutory requirement of identifying the first and true inventor is often muddled by the mores and practices of academic science. Unfortunately, and despite claims of scientists and attorneys to the contrary, I contend that the inventive entity is not discovered but rather determined in and through social relationships. Although universities should always strive to promulgate policies which fully comport with the law, the biggest incentive for universities to insist on correct inventorship is financial. I argue that the rise in mentee claims for sole or joint inventorship, as well as the ever-present threat of an inequitable conduct defense in a patent infringement suit, jeopardizes the ability of the university to generate royalties from licensing agreements. To protect this revenue stream, I contend that universities must revisit their "hands off" approach to the inner workings of the academic research group, at least with respect to determining the correct inventorship for a patent application.